Appeal No. 2003-1477
Application No. 09/248,533
specification repeatedly stress the cost advantage of forming
these zones by a printing method using silver paste as opposed to
the more expensive prior art method involving copper lamination
(e.g., see the paragraph bridging pages 1 and 2, the first full
paragraph on page 2 and the first full paragraph on page 6 of the
originally filed specification).
Under the circumstances recounted above, in any further
prosecution that may occur, the appellants and the examiner
should address and resolve whether claim 8 offends the written
description requirement and/or the enablement requirement set
forth in the first paragraph of 35 U.S.C. § 112.
CONCLUSION
We have sustained each of the examiner’s prior art
rejections but not his § 112, second paragraph, rejection.
The decision of the examiner is affirmed.
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